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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Cupcake Patrol

Case No. D2000-1344

 

1. The Parties

Complainant is Microsoft Corporation ("Complainant" or "Microsoft"), a corporation incorporated under the laws of the State of Washington, with a principal place of business located at One Microsoft Way, Redmond, Washington 98502 USA.

Respondent is Cupcake Patrol ("Respondent" or "Cupcake") located at 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, 19020 USA.

 

2. The Domain Names and Registrar

The domain names at issue are "encartaencyclopedia.com" and "encata.com" (the "Domain Names"). The registrar is Internet Council of Registrars (the "Registrar"), World Trade Center II, 29, Route de Prй – Bois, CH – 1215, Geneva, Switzerland.

 

3. Procedural History

On October 6, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On October 9, 2000, the Center received hardcopy of the Complaint. On October 11, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On October 13, 2000, the Center requested amendment of the Complaint. On October 18, 2000, the Center received an Amendment to the Complaint from Complainant via email. On October 19, 2000, the Center received the Amendment in hardcopy.

On October 17, 2000, after the Center sent a Request for Verification to the Registrar (on October 13, 2000) requesting verification of registration data, the Registrar confirmed, inter alia, that it is the Registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On October 23, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On November 14, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On November 24, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.

 

4. Factual Background

Microsoft is a well-known, worldwide provider of computer software and related products, including products designed for use as reference and educational tools, many of which are distributed under the famous MICROSOFT and ENCARTA marks. Microsoft also provides an online suite of reference and educational materials, including an encyclopedia, dictionary and atlas, under the ENCARTA mark at "www.encarta.msn.com".

Microsoft has obtained several trademark registrations in the United States and elsewhere for the ENCARTA mark in several classes of goods and services, including registrations for use in connection with: (1) on-line information services, namely providing reference and encyclopedic data in electronic form; (2) computer program and general reference data in the form of a multi-media encyclopedia on a variety of subjects, stored on compact disc; (3) publications, namely, books, magazines, newsletters, brochures, pamphlets, atlases, maps, user guides for atlases and maps, all on a variety of subjects; dictionaries, thesauruses, instruction manuals, user guides and reference guides for a multi-media encyclopedia on a variety of subjects; and (4) instruction manuals, user guides and reference guides for a multi-media encyclopedia on a variety of subjects.

Microsoft has spent substantial time, effort, and money advertising and promoting the ENCARTA mark throughout the United States and the world. Currently, Microsoft’s website "www.encarta.msn.com" has over 4 million visitors each month. In addition, over the past four years, Microsoft has sold more than 40 million copies of its ENCARTA software worldwide. As a result, Microsoft has developed goodwill in the mark making it a valuable corporate asset.

Respondent registered the domain name "encartaencyclopedia.com". In addition, Respondent has also registered "encata.com" a domain name that is a slight variation of the ENCARTA mark.

Entry of the Domain Names pulls up Microsoft’s "www.encarta..msn.com" website and links to five other websites. The sites are three "www.cupcakeparty.com" websites, "www.online-games.org", "www.musiclyrics.net" and "www.gamesmp3.com". These sites appear in a slightly smaller frame in front of Microsoft’s "www.encarta.msn.com" display and obscure virtually all of Microsoft’s display such that the Microsoft display appears to completely surround these sites.

According to the Registrar’s Whois database, JZ Design is listed as the registrant of "cupcakeparty.com". The administrative contact listed for the registration is Bobby Vee of JZ Design, 957 Bristol Pike, Andalusia, Pennsylvania, 19020 USA. According to the Registrar’s Whois database, Mr. Zuccarini is listed as the registrant for "online-games.org". According to the Registrar’s Whois database, Cupcake-Show is the registrant for "musiclyrics.net". The administrative contact listed for the registration is Mr. Cupcake Movies, 957 Bristol Pike, Andalusia, Pennsylvania, 19020 USA. According to the Registrar’s Whois database, Mr. Zuccarini is the registrant for "gamesmp3.com". The administrative contact listed for this registration is Mr. Zuccarini, 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania,19020, USA. By the commonality of registrants and addresses, it appears that Mr. Zuccarini controls these registrations.

On July 25, 2000, Microsoft sent Respondent’s representative, John Zuccarini, a letter via email and certified mail, in which it informed him that Microsoft considered his registration of the "encartaencyclopedia.com" name to infringe upon and dilute the ENCARTA mark. Microsoft requested, among other things, that Mr. Zuccarini cease and desist from its use of the domain name "encartaencyclopedia.com" and transfer the registration to Microsoft.

On March 22, 2000, the United States District Court for the Eastern District of Pennsylvania granted a preliminary injunction under the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d), against Mr. Zuccarini, trading as Respondent, for Mr. Zuccarini’s bad faith registration of domain names that were substantially similar to plaintiff’s trademarks. See Shields v. Zuccarini, 2000 U.S. Dist LEXIS 3350 (March 22, 2000). In Shields, the plaintiff created, exhibited and marketed cartoons under the names "Joe Cartoon" and "Joe Cartoon Co." 2000 U.S. Dist LEXIS at *2. The plaintiff used the trademark JOE CARTOON to market his cartoons for the past fifteen years and registered the domain name "joecartoon.com" on June 12, 1997. Id. In November of 1999, Mr. Zuccarini, on Respondent’s behalf, registered as domain names five variations of the plaintiff’s trademark "joescartoon.com", "joecarton.com", "joescartons.com", "joescartoons.com", and "cartoonjoe.com." Mr. Zuccarini hosted web sites at these domain names featuring advertisements for other sites and for credit cards and received between 10 and 25 cents from advertisers for every click-through. Id. The Court in Shields granted plaintiff’s preliminary injunction, finding that Zuccarini has engaged in exactly the type of conduct the ACPA is designed to prevent and [that plaintiff] will suffer irreparable harm unless we enjoin this flagrant violation of his rights. Id. at *26.

Recently, in Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000), under circumstances identical to those presented here, an ICANN Dispute Resolution Panel found that Mr. Zuccarini’s registration of the domain names "encyclopediabrittanica.com", "brtanica.com", and "bitannica.com", and "britannca.com" was an attempt "to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s web site" and was in bad faith. Id. at 3. The panel ordered the transfer of those names to the complainant, Encyclopedia Britannica.

Mr. Zuccarini has also attempted to benefit from Microsoft’s other famous trademarks, MICROSOFT and MSN, and from Microsoft’s website "www.msn.com" and "www.messenger.msn.com." Mr. Zuccarini is the principal officer and administrative contact for Cupcake City aka Cupcake Party, and registered the domain names "msninstantmessenger.com," "microsoftmessenger.com," and "msnmessanger.com," in the name of Cupcake City. Similar to this case, entry of these domain names pulled up Microsoft’s MSN Messenger Service website. The Sole Panelist found (a) that Respondent had registered domain names that were identical with or confusingly similar to Microsoft’s registered trademarks MICROSOFT or MSN, (b) that Respondent had no rights or legitimate interest in the contested domain names and (c) that Respondent registered and used the contested domain names in bad faith. Therefore, the Sole Panelist ordered that the contested domain names be transferred to Microsoft Corporation. See, Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 (October 22, 2000).

In addition to the Domain Names at dispute in this administrative proceeding, Respondent has domain name registrations for "aolmessanger.com", "weirdalyankovic.com", "playstation.com" and "gloriaestafan.com".

 

5. Parties’ Contentions

A. Complainant contends that it has registered trademarks in MICROSOFT and ENCARTA. Complainant further contends that the Domain Names are identical with and confusingly similar to the MICROSOFT and ENCARTA trademarks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent does not contest Complainant’s assertion that it has registered trademarks in MICROSOFT and ENCARTA or that the Domain Names are identical with and confusingly similar to the trademarks.

Respondent failed to contest Complainant’s assertion that Respondent has no rights or legitimate interest in the Domain Names.

Respondent failed to contest Complainant’s assertion that Respondent registered and used the Domain Names in bad faith.

 

6. Discussion and Findings

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Identity or Confusing Similarity

Complainant contends that it has registered trademarks in MICROSOFT and ENCARTA and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the ENCARTA mark. 15 U.S.C. § 1115. Microsoft further alleges that its U.S. Reg. Nos. 184262 and 187457 are incontestable and conclusive evidence of Microsoft’s ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).

Respondent has not contested the assertions by Microsoft that it has valid registrations of the MICROSOFT and ENCARTA marks. Therefore, the Sole Panelist finds that Microsoft has valid trademarks in MICROSOFT and ENCARTA.

Complainant further contends that the Domain Names are identical with and confusingly similar to the MICROSOFT and ENCARTA trademarks pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Microsoft that the Domain Names are confusingly similar to the MICROSOFT and ENCARTA marks.

The Domain Name "encartaencylopedia.com" consists of the ENCARTA mark in combination with the term, "encyclopedia" which merely describes a significant service offered under the ENCARTA mark. As such, it is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of Respondent’s services in that consumers and others are likely to believe Microsoft authorizes or controls Respondent and/or the "encartaencyclopedia.com," "cupcakeparty.com," "online-games.org," "musiclyrics.net," and "gamesmp3.com" sites, or that Respondent and/or the "encartaencyclopedia.com," "cupcakeparty.com," "online-games.org," "musiclyrics.net," and "gamesmp3.com" sites are associated with or related to Microsoft.

The Domain Name "encata.com" is merely a slight misspelling of the mark ENCARTA. As such, it is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of Respondent’s services in that consumers and others are likely to believe Microsoft authorizes or controls Respondent and/or the "encata.com," "cupcakeparty.com," "online-games.org," "musiclyrics.net," and "gamesmp3.com" sites, or that Respondent and/or the "encata.com," "cupcakeparty.com," "online-games.org," "musiclyrics.net," and "gamesmp3.com" sites are associated with or related to Microsoft.

Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to either or both the MICROSOFT and ENCARTA marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the MICROSOFT or ENCARTA marks.

The Policy paragraph 4(c) allows three nonexclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has offered no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

The Sole Panelist further finds that Respondent and its principal officer and administrative contact, Mr. Zuccarini, have engaged in a scheme to register numerous domain names that are comprised of famous trademarks and famous celebrity names or slightly misspelled versions of those trademarks and names. Such a scheme shows Respondents purpose to profit from the sale of the Domain Names to Microsoft or one of its competitors and a pattern designed to prevent Microsoft from reflecting its registered marks in corresponding domain names.

The registration of numerous domain names that contain the names or marks of well-known business entities or famous persons also suggests an intent to profit from those registrations and is inconsistent with an intent to engage in any legitimate use of the domain names. See Stella D’Oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012 & 5(b)(1), (2); Nabisco Brands Co. v. The Patron Group, Inc., WIPO Case No. D2000-0032 & 5(b)(1), (2); J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035 ¶ 6; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 & 6(c)

The Sole Panelist found above that the Domain Names are confusingly similar to either the MICROSOFT or ENCARTA marks pursuant to the Policy paragraph 4(a)(i). Especially given that, upon typing in the Domain Names, Microsoft’s site appears, Respondent’s use of Microsoft’s mark is certain to result in confusion.

Therefore, the Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i).

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(ii).

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.

On July 25, 2000, Microsoft sent Respondent’s representative, John Zuccarini, a letter via email and certified mail, in which it informed him that Microsoft considered his registration of the "encartaencyclopedia.com" name to infringe upon and dilute the ENCARTA mark. Microsoft requested, among other things, that Mr. Zuccarini cease and desist from its use of the domain name "encartaencyclopedia.com" and transfer the registration to Microsoft.

In addition to any actual knowledge Respondent may have had regarding Microsoft’s rights in the MICROSOFT and ENCARTA marks when it registered the Domain Names, it had constructive knowledge of Microsoft’s rights in the MICROSOFT and ENCARTA marks by virtue of Microsoft’s federal trademark registrations. 15 U.S.C. § 1072. Despite its knowledge of Microsoft’s rights, Respondent has registered Domain Names that incorporate the MICROSOFT and ENCARTA marks along with a description of services marketed under those marks. In light of Microsoft’s trademark registrations, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The evidence establishes (i) the renown and strong reputation of the ENCARTA mark; (ii) Respondent’s history and practice of registering domain names that contain famous trademarks or names, or slight misspellings of those marks and names; (iii) Respondent’s use of the Domain Names to deliberately divert traffic from Microsoft’s site to Respondent’s own sites; (iv) the preliminary injunction entered against Respondent for similar conduct in Shields v. Zuccarini; (v) the finding of bad faith by the panel in Encyclopedia Britannica, Inc. v. Zuccarini; and (vi) the absence of any plausible use of the Domain Names that would constitute good faith. Based upon this evidence, the Sole Panelist concludes that in addition to the four nonexclusive criteria set forth in the Policy paragraph 4(b), the evidence supports a finding of Respondent’s registration and use of the Domain Names in bad faith.

Therefore, based upon each of the foregoing grounds, the Sole Panelist finds that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names "encartaencyclopedia.com" and "encata.com" are confusingly similar to Complainant’s registered trademarks MICROSOFT or ENCARTA, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Microsoft Corporation.

 

 


 

 

Richard W. Page
Sole Panelist

Dated: December 10, 2000

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1344.html

 

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